A Section 2(e)(2) Refusal means that the USPTO believes your trademark would primarily be viewed as geographically descriptive by consumers.

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Let’s use an example.

Let’s say I’m selling my goods in Las Vegas and my trademark is LAS VEGAS.  Las Vegas is a super well-known location.  When people see that trademark, they would immediately think of this popular city known for entertainment.

You can see why a Section 2(e)(2) refusal would be issued in this case.  This trademark really is only describing a well-known place that most consumers will immediately recognize.

This refusal can also apply to a wide variety of geographic locations, such as a country, city, state, continent, locality, region, area, or street.  It can even apply to nicknames for geographic locations, such as “Big Apple” for New York.

Specifically, the USPTO uses a three-part test to determine whether the trademark is primarily geographically descriptive.

First, the USPTO considers whether the primary significance of the trademark is a generally known geographic place.

Here, Las Vegas is a very well-known geographic location.  In fact, it’s hard to imagine talking to someone who isn’t familiar with Las Vegas!

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Second, the USPTO considers whether the products or services originate in the location identified in the trademark.

Here, let’s say I’m selling t-shirts, and I’m making and selling those t-shirts in Las Vergas.  In that case, it is clear that the products I’m selling “originate” in Las Vegas.

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Third, the USPTO considers whether consumers are likely to believe that the goods or services originate in the geographic location identified in the mark.

Here, my trademark is LAS VEGAS, and I’m selling the goods in Las Vergas.  It would make sense that consumers are likely to believe that the t-shirts are “originating” in Las Vegas.  

Here a few more things about this Refusal.

First, note the use of the word “primarily” in this refusal.  The trademark must be “primarily” geographically descriptive in order to be refused under this basis.

Consider whether there are any additional words, designs, or meanings in your trademark that make it so that the trademark wouldn’t PRIMARILY be viewed as geographically descriptive. 

Let’s use an example.

Let’s say I’m still selling t-shirts, and my trademark is LAS VEGAS T-SHIRTS.  Here, does the additional T-shirts word change the analysis?  No, because the word is t-shirts, and I’m selling t-shirts, so consumers will still focus on the Las Vegas wording.

But suppose I’m still selling t-shirts, and my trademark is ZOOMPA LAS VEGAS NUGGETS.  Does the extra wording of “ZOOMPA” and “NUGGETS” change the analysis?  Yes! The trademark has additional words such that the consumer is no longer primarily viewing the trademark as geographically descriptive of Las Vegas.   In that case, you would need to disclaim the wording “LAS VEGAS” but the trademark wouldn’t be primarily merely geographic under Section 2(e)(2).

Or, there are instances where a design element in your trademark makes it so that your trademark is no longer primarily geographically descriptive.

So, let’s say I’m selling t-shirts and I have the trademark LAS VEGAS, which has a bunch of design elements of puppies.  In that case, the wording LAS VEGAS is actually no longer primarily geographically descriptive.  In that case, you would just need to disclaim the “LAS VEGAS” wording, but the trademark wouldn’t be primarily merely geographic under Section 2(e)(2).

For more information on disclaimers, you can watch the Disclaimers Video in the Trademarks Classroom. 

To recap, a Section 2(e)(2) Refusal means that the USPTO believes your trademark is Primarily Geographically Descriptive.  There is a 3-part test that the USPTO uses in this analysis.  And, in order to establish this refusal, remember the meaning of the word “primarily” in this refusal.

So, what do you do when you receive this Refusal?

You could argue against this Refusal in your response.  Perhaps you believe that there are additional words, designs, or meanings in your trademark that make it so that the trademark wouldn’t PRIMARILY be viewed as geographically descriptive.

Or, you could agree with this Refusal, and accept that the trademark is primarily merely geographic.  Take a step back and read the Office Action, and see if you agree with the trademark examining attorney’s decision.  If you do, what happens in that case?  Well, you can still register your trademark – EVEN if it is refused as primarily geographic!

In that case, a common response is amending your application to the Supplemental Register.  Applicants are immediately eligible for the Supplemental if they are already selling their goods or services.  Or, they can register to the Supplemental Register at a later time, once they show proof that they are selling their goods or services.  For more information on amending to the Supplemental Register, and the benefits of the Supplemental Register, look at the Supplemental Register video in the Trademarks Classroom. 

Second, you can make a claim or argue that your trademark has “acquired distinctiveness” under Section 2(f) of the Trademark Act.  

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Well, what does that mean?

Generally, applicants can argue that their trademarks have “acquired distinctiveness” when they have prior federal trademark registrations with the same trademark for similar goods and services, they’ve used their trademark for five years in commerce, or if they provide actual evidence of acquiring distinctiveness.  For more information on “acquired distinctiveness” claims, you can review the Section 2(f) Acquired Distinctiveness video in the Trademarks Classroom.

As a review, when you receive this refusal, you can argue against this Refusal in your response.  Or, if you agree with the refusal, then, -- depending on your particular application -- you might consider amending your application to the Supplemental Register or making a claim of acquired distinctiveness.